Appeal No. 2007-0737
Application No. 10/290,606
same function as Ellis’s mechanical system and which meets the limitations
of the claimed invention.
Appellant contends that there is no motivation to have eliminated the
mechanical system from Ellis’s scoop.
The question in this appeal is whether the prior art provides the
requisite motivation under 35 U.S.C. § 103(a) to have modified Ellis’s scoop
by substituting manual operation for Ellis’s mechanical pressure system to
dislodge ice cream from an ice cream scoop.
DISCUSSION
A claimed invention is obvious “if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a). To make this determination, we consider whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124, 56 USPQ2d
1456, 1459 (Fed. Cir. 2000). “Underpinning this legal inquiry are four
groups of factual findings . . . (1) the scope and content of the prior art; (2)
the differences between the claimed invention and the prior art; (3) the level
of ordinary skill in the art; and (4) any relevant secondary considerations,
including commercial success, long felt but unsolved needs, and failure of
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013